Precedents disclosed above appear to
suggest that there is no necessity to have a patent marking if a patent only
contains method claims.In order to
know whether or why it is correct, we would like to discuss this issue in depth.

Let us quote what the court reasoned
in American Medical Systems as follows:

The purpose
behind the marking statute is to encourage the patentee to give notice to the
public of the patent.The reason
the marking statute does not apply to method claims is that, ordinarily, where
the patent claims are directed to only a method or process there is nothing to
mark.Where the patent contains
both apparatus and method claims, however, to the extent that there is a
tangible item to mark by which notice of the asserted method claims can be
given, a party is obliged to do so if it intends to avail itself of the
constructive notice provisions of section 287(a).

From the above quotation, we know
that:

1. The marking statute is merely
to encourage giving notice to the public.Such
precise wording has been substantiated by our discussions above that although
failure to mark will lose the rights to claim damages, it does not harm other
rights a patentee can take according to the applicable laws;

2. ˇ§The reason the marking
statute does not apply to method claims is that, ordinarily, where the patent
claims are directed to only a method or process there is nothing to mark.ˇ¨We will analyze this sentence as follows:

A. Normally, the marking statute does not
apply to method claims.That is,
for a patent of method claims, the applicant is not bound by the marking
statute;

B. The reason is that normally, where the
patent claims are directed to only a method or process, there is nothing to
mark.Specifically, through the use of the word ˇ§only,ˇ¨ it is
referring that what is involved in such method or process is the manipulating
step or procedure for completing a process-directed task and is irrelevant to a
product;

C. The following questions come and need
be discussed:

a. What is meant by that a process is
irrelevant to a product?A method
for operating a machine or computer in a way different from a conventional one
should be so categorized in that no change will be present in the result.What are the answers to the following questions: if there is a product
coming out of machine using the new or patented operating procedure for the
machine:

i. The efficiency of the machine
is improved so that the machine can produce more products identical to the prior
ones.Since the product in this case does not subject to any
change, it is believed that this is also a process-directed model; and

ii. There is a situation that not
only the efficiency of the machine is improved, but also the product produced
thereby is subject to a change, which is identifiable from the resulting
product.Although the patent has
nothing to directly do with the product itself, despite the possibility of being
categorized as above, we might find reasons to support that this situation shall
not be so categorized in that:

(i) The change-identifiable product is
resulting from the patented procedure;

(ii) We might have a restless mind if we
determine that there is nothing to mark in this situation since it is clear that
there is an identifiable product to be marked to enable the product to be
conjoined to the patented process;

(iii) We cannot sever the possible or
subtle connection between the product and the patented process;

(iv) Accordingly, if some one asserts that
a product, which is changed somehow by a process, which, however, is not
originally devised to make any change on the product should be marked with the
patented process, we would like not to blame or discourage his or her such
assertion.

b. What is meant by a process-directed
task?For example, a method for doing business should be so
categorized.As above-described, it
might be safe for us to conclude that a process should be product-free when a
patented process will not make any difference to a product, which has already
been in existence and might have some connection with the patented process.Accordingly, there come the following discussions:

i. If a machine is used to
produce a product and a patented process for operating a machine is involved in
without changing the resulting product in any way, it should be clear that the
product be not marked.

ii. In this situation, since what
is patented is the operating process for the machine, even the machine itself is
not changed in any way.Although
the operating conditions will bring forth some accompanying operating changes to
the machine, the involved changes normally happen in minor or insignificant
cooperating aspects with respect to the machine so that the machine itself is
generally not changed anyhow.Accordingly,
there is no reason for us to mark the machine itself.

iii. Since the patented process
resulting product or the patented process operated machine do not subject to any
change so that it is unnecessary for either of them to be marked, we cannot find
any tangible article to affix the patented notice for such patented process so
that it should be correct for us to take that no marking is required for such
patented process.

3. Through the above deduction
and the reasoning in the above-quoted precedent that ˇ§to the extent that there
is a tangible item to mark by which notice of the asserted method claims can be
given, a party is obliged to do so if it intends to avail itself of the
constructive notice provisions of section 287(a),ˇ¨ we should be able to
conclude that if there is something to be marked although the patent claims are
directed to only a method or process, the patentee shall mark on either the
machine or the product which is closely linked to the patented process in such a
manner that the machine or the product itself is so changed by the patented
process that it no more the same as one operating or produced without the
patented process.The word ˇ§onlyˇ¨ in the sentence that ˇ§the patent claims
are directed to only a method or processˇ¨ no more must preclude that the
operating machine or the produced product has nothing to do with a patented
process in essence.

4. Where the patent contains both
apparatus and method claims, it goes without saying that the article protected
by the subject matter embodying the apparatus claims need be marked.Nevertheless, we need to discuss again as follows:

A. If the article protected by the
apparatus claims has been marked, is it naturally compulsory that there will no
more be requirements for the method claims to be marked?We would like to make a reservation here because:

a. Although through unity of invention, an
application can only cover a single invention, it is quite possible that in the
application claiming both apparatus claims and method claims, the subject matter
sought by the method claims is so different from that sought by apparatus claims
so that the products embodied by the apparatus claims are different from those
embodied by the method claims.Under
such situation, need products manufactured according to the method claims be
marked for complying with the statutory requirements for methods claims?

b. It is believed that through the above
discussions, we have made our position clear that as long as a specific product
will reflect on itself the shadow or spirit of method claims, it will be
necessary for such specific product to be marked.

c. Although we cannot know whether the
court will adopt or accept our position, we do believe that it would appears
that what are set forth in the above are logical and would like not to believe
otherwise unless persuaded to the contrary.

B. As could be understood from the above,
if the apparatus claims in a patent will be embodied in different products, each
such product needs to be marked.

C. Accordingly, if method claims in the
patent are embodied in plural products, each such product needs be marked also.

5. The above is made based on the
fact that there is a product reflecting the existence of method claims.As such, it will be naturally true if the relationship between the
process and the product is strengthened, e.g. in the situation that through the
operation of the method, there must be resulting therefrom a product, compared
to the situation that the patented method claims do not in themselves relate to
production of a product but will exhibit their influence or effect on the
resulting product, if any.The
above position that method claims need be marked on the interlinked product
therewith will become truer.

* If the patent includes a
combination of apparatus and method claims, is there a possibility that no mark
is required for successfully claiming damages with method claims being
infringed?

Although through the above
discussions, we might be able to accept that method claims should be marked also
at some situations, is it possible that a product embodying the apparatus claims
needs not be marked while the patentee is still enjoying the protection of
apparatus claims?

We would like to discuss this issue as
follows:

1. Do apparatus claims include
product claims?Here, it is
believed that the term of apparatus claims is something like a metaphysical
phrase for denoting a kind of claim type, which is in contrast with the method
claims.Specifically, any type of a
claim, which is not categorized as a method claim is an apparatus claim.

2. Is it possible that in a
patent having both apparatus claims and methods claims, the role of apparatus
claims is minor and that of method claims is major?Let us assume there are 20 claims in a patent wherein 19 claims are
directed to the method with a last claim read as follows: 20. A product produced
according to a method of claim 1 (or any one of claims 1 to 19).Some persons like to regard such claim as a dependent claim since it
incorporates therein essential elements of other claims.We, however, would like to consider such claim as an independent claim
since A) the subject matters of such claim and the imaginarily existent depended
claim are different; and B) such claim can become a pure and indisputable
independent claim if the drafter is willing to spend a few seconds to copy full
contents of the imaginarily depended claim through a simple operation of the
computer.Accordingly, it appears
to be unconvincing that an independent claim of a first subject matter will
naturally become a dependent claim of a depended claim of a second subject
matter simply because the smart human being is desirous of saving some time and
keeping the claim text concise.If
such product claim is regarded as a dependent claim of a method claim, there
will be no obligation to mark the product according to the precedents.Nevertheless, if we take such product claim as an independent one, it
should be not controversial that the apparatus claim is only playing a very
minor role here where it would be cruel for us to take that if there is no
marking in the product, the patentee does not have fulfilled the obligation of
patent marking.

3. Is it possible that the
product embodying the apparatus claims need not be marked when the role of
method claims in the same patent is major or dominant, or the role of apparatus
is minor or trivial?As
above-described, there should be a room that even if a patent possesses an
apparatus claim or apparatus claims, there is no requirement for it to mark the
product as long as proper persons will be satisfied that what the apparatus
claim plays is so minor or trivial in the patent.

4. Is it possible that since
apparatus claims are minor while method claims needs not be marked due to the
nature in issue, method claims in a patent both having apparatus claims and
method claims will be protected even if no product relating to the patent is
marked.If the above reasoning is
found convincing, some day in the future there might be a case for which the
court so confirms the existence of the exceptional situation as contemplated
above.

* Can the marking be such made that
it can be identified only by a magnifying glass or the like?

Since precedents teach that unless it
would have become time-worn and illegible or may disfigure the product, the mark
must be clear and legible to the naked eye on the product, or on the package if
it is physically impossible to mark the product, it is believed that the future
precedents, if any, will likewise confirm acceptable if the marking can be
identified only by a magnifying glass or the like so long as we can equally
solicit the lenient mind of the court in that having a compact size normally is
a major concern for any a product nowadays.As such, if a patented product is so tiny that if the patent marking is
to be made on the product, it can only be completed by a micro laser
inscription, which can only be identified by a magnifying glass or even an
electronic microscope, is there anything wrong for such practicing the patent
marking?We do not believe this is
a problem because the law must change with the tide or the time in order that
the human being can happily lead their suitable lives in different periods or
eras on earth.As an example, we
have well-advanced semiconductor technology and/or techniques, which normally
manufacture the thing so powerful but small that it is impractical for us to
mark thereon in a manner which complies with the finding of the conventional
precedents.Accordingly, it is
believed that comparable adjustments to the teaching of past precedents are
permissible as long as it is a naturally logical conclusion in the mind of the
general public that due to the advancement of the society, such adjustments are
reasonable and compulsory.

* If it is not important for the
patent marker to make it clear how many patents are involved in the patented
article or item, is it important that the patent number is made clear in the
patent marking?

It is easily imaginable that a
patented item might be protected by several patents so that there may also be
marked with a list of patent numbers on the patented item.Nevertheless, according to Chicago Pneumatic Tool Co. v.
Hughes Tool Co., alternatively, a statement that the patented item is covered by
one or more of these patents can do.It
is not ultimately clear why this court so reasons here in that:

1. If the patented item is
covered by one or more of some patents, it would mean that a certain of said
some patents might not cover the patented item, which is a violation of the law
so far as the patent marking is concerned;

2. The scenario should be that a
combination or a set of articles are respectively or commonly protected by a
list of patents each of which is to protect at least one of said articles so
that a piece of said articles is protected by one or more of the listed patents.If this is the real case, we might not be easy to criticize
the reasoning of this court;

3. At any rate, right here, where
the statement only mentions a patented item is protected by one or more of a
list of patent numbers, one cannot definitely or exactly know which one or how
many ones of said listed patents are protecting a specific article, which
appears not to follow very well the teaching or spirit of 35USCˇ±287(a) which
stipulates that for giving notice to the public that the same is patented, one
should either fix thereon the word ˇ§patentˇ¨ or the abbreviation ˇ§pat.ˇ¨
together with the number of the patent.We
might agree or disagree as follows:

A. The side we agree: The law
only requires one show the number of the patent.Since the patentee has prepared a list of patent numbers here by
mentioning the patented item is protected by one or more of them so that this
requirement has been met;

B. The side we disagree: Normally
or frequently, a product is protected by a single patent.Although what the law provides here does not make it a must that the
patentee must associate as many patent numbers as the product is really intended
to be protected, it is natural that one will understand the statutory provision
to represent that the patent number should be marked on the notice so that any
third party can easily check the number from the notice, which in turn allows
the third party to obtain the patent claims for further ascertaining whether
there does exist an infringement?

4. It would appear from the above
that it will make more sense for us to take that the patent number should appear
on the notice exactly in order that any third party can readily know which
patent is concerned by the patentee for the specific product.Accordingly:

A. We cannot list several patent
numbers in a notice while only one of them is relevant to the protection of the
specific product if there is no particular situation;

B. Normally, if we list several
patent numbers on the relevant notice, it would mean that all patent numbers are
relevant to the specific product.If
this is not the case, the patentee will violate the law;

C. Thus, the loosened notice
statement made by Chicago Pneumatic Tool Co. v. Hughes Tool Co. that the
patented item is covered by one or more of listed patents should only be
applicable when a set of products are involved in where each product is
protected by a respective patent number.

5. Accordingly, the question here
does not exist since Chicago Pneumatic Tool Co. v. Hughes Tool Co. should not be
taken to denote that it is unimportant for the patentee to make it clear how
many patents are really claimed to protect a product.Specifically, it remains important that the patentee should clearly mark
every patent number desired to possibly exercise the rights on the notice in a
normal circumstance.

* If it is unimportant in the
patent marking to identify which specific patent is referred to, is it really
important and/or compulsory that which specific patent should be identified in
the actual notice?

In the above, we have reasoned that
there should be no precedent, which teaches and suggests that it is unnecessary
for the notice to identify which specific patent is referred to protecting a
specific product.Although we
cannot determine our reasoning above must be correct, it appears that we should
not put too much efforts here to determine that an exact answer for the above is
the prerequisite for discussing the following topic.

Specifically, is it possible that a
direct notice has something in nature, which is different from an actual notice?As Amsteadlndus. indicated, in an actual notice, it must allege
infringement and inform the infringer which specific patent is infringed.Here, it might deserve us to discuss as follows:

1. Without the reference of a product, it
is not easy to describe what might be infringing a patent?By the statutory notice, the patentee is declaring that any one who is
interested to make a product similar to that on which the notice is placed
should carefully study whether there is a potential infringement.Accordingly, the product itself serves as a medium to alert
the possible person who is interested to make a similar or identical product.In as much as the product having been marked, a very important cue has
been established, which generates a possibility that some information about the
patent might not be so critical since the potential maker for identical or
similar products has been given a clear message of possible infringement through
the notice on the product.

2. To inform a person what he makes is
infringing is also uneasy without referring to a specific patent.This will explain why a statutory marking notice is preemptively
advantageous in that the patentee will have the liability to try to prove
something in an actual notice as to why there is an infringement while in a
marking notice, the potential identical or similar product producer will have
the obligation to stay away from infringement.

3. Accordingly, we have thus known that
there do be differences in nature between the marking notice and the actual
notice.What we cannot readily know
are that:

A. Whether such differences are sufficed
to make reasonable that the practices for the marking notice and the actual
notice should be different?In this
regard:

a. Amsteadlndus considered for an actual
notice, it must allege infringement and inform the infringer which specific
patent is infringed while 35USCˇ±287(a) stipulates for giving marking notice,
one should either fix thereon the required word together with the number of the
patent;

b. Although we cannot know whether we can
have unanimous consent that ˇ§a specific patentˇ¨ is meaning the same with
ˇ§the number of the patent,ˇ¨ according to the general understanding in
language, it would appear that the former leaves no much room to argue what is a
specific patent whereas the latter does give room to the reasonable existence of
the loosened notice statement made by Chicago Pneumatic Tool Co. v. Hughes Tool
Co. that the patented item is covered by one or more of listed patents;

c. Thus, the court appears more lenient to
the marking notice than the actual notice.

B. If yes, what kinds of differences in
practices are justified?How far
can the court be lenient for the marking notice?Can the following case be allowed by the court?A patentee owns 10 different products, where these products do not have
the possibility to be grouped together in any way to form one set, respectively
protected by 10 patents.For
complying with the marking requirements in a simpler way, can the patentee
prepare a general label containing a list of 10 patent numbers and stating any
one of his 10 products is protected by one of 10 listed patents to be fixed to
any of his products?We would like
to leave the answer to this question to the US patent attorney.

It is thus believed that it is
critical and compulsory that a specific patent must be specified in an actual
notice.

* Can any one tell that under the
situation that the product is not marked, which one of provisions that the
infringer is not liable for damages without an actual notice and that the
infringer is liable for damages with an actual knowledge of the patent is
better?

According to the law, unless there is
an actual notice, one cannot claim damages if the product is not marked.Here we could have interesting comparisons and considerations in this
regard where there is no patent marking as follows:

1. The infringer neither knows there is an
infringement nor receives an actual notice: Under such situation, we need not
discuss more;

2. The infringer does not know there is an
infringement but does receive an actual notice of infringement: According to the
law, the infringer is liable in this case.It is believed that one cannot find opposite reasons to negate the
liability of the infringer in this case for the actions made by the infringer
after he receives the actual notice from the patentee;

3. The infringer does know there is a
possible or an actual infringement but does not receive an actual notice:
According to 35USC287(a), it would appear that the infringer is not liable for
damages.Nevertheless, there are
possible alternative interpretations for this sentence, i.e.:

A. The infringer has no liability
under all applicable laws: If this is the case, we must question or wonder
whether such provision is justified?This
is because our bottom heart might ask whether we will take it for granted that
an intentional wrongdoing needs not be punished simply because the patentee does
not formally issue a written document stating a fact which has been clearly
known to the infringer?

B. Although the infringer has no
liability under the patent law, it is liable under other applicable law, e.g.
the tort law by which a person can claim damages from another person who
intentionally engages in an action, which infringes otherˇ¦s rights.Such assertion might be acceptable if we really consider that the
infringer is not liable for damages under the patent law;

C. If the alternative B is
available, it might be unnecessary or we do not have strong motive to discuss
whether we should find a way to allow the patentee to claim damages under the
patent law for the action of an infringer who has actual knowledge that what he
does is an infringing action.If
decided not available by the court, some one might have a drive to discuss or
develop in the way above suggested.Again,
we would like to leave further discussions in this regard to the US attorneys.

4. The infringer knows there is an
infringement and receives the actual notice: This should not deserve us to
discuss here.

Accordingly, if we are compelled to
answer that under the situation that the product is not marked, which one of
provisions that the infringer is not liable for damages without an actual notice
and that the infringer is liable for damages with an actual knowledge of the
patent is better, we will choose the latter.

* Will the patentee fail to comply
with the statute if he does not immediately mark its product after the issuance
of the patent?

The district court ever concluded that
American Medical Systems was ˇ§obligated to have marked all [products]
subsequent to the issue [issuance] of the patent except that it is allowed a
relatively small number to be shipped unmarked as it readies the marking
process.ˇ¨The possible time
points for determining whether the marking requisite has been complied with
include:

1. The time when the patent
issues: This is very easy to judge whether such requisite has been complied
with;

2. The time when a relatively
small number has been ready to be commercially shipped: It is uneasy to define
what is a relatively small number?For
a product having an international market with extensive demand, a relatively
small number might mean 1 million pieces; and

3. The time when the patentee is
reminded of marking or decides to mark on the product a period of time after the
patent issues: It appears that under such situation, the court will regard that
the patentee fails to comply with the marking statute.The rationale might be that since some quantity of the products has been
marketed unmarked, it is possible that lots of people will have the opportunity
to gain access to the products without knowing the marking notice.This status will not be changed even the patentee has marked
thereafter so that the law will assume that the patentee has failed in complying
with the statute.The question we
can have here is what the situation will be if the patentee can prove that the
potential infringer can gain access to the patent technique or patented product
only after it has marked on the product?Before
we can reply this question, we must know the answers to the following questions,
i.e. by the statutory marking requirements, does it mean the (patent) law
desires to prevent:

A. The innocent potential
infringer from a prejudicial disadvantage: If this is the case, the assumption
made by the above court is wrong so that the correct interpretation to the law
should be as soon as the patentee has made the marking and proved that the
infringer produces the infringing product after becoming known to the existence
of the patent, the patentee has fulfilled its obligations before the law; or

B. Legal rights of the patentee
from being etched away through a highly recommended precautious measure duly
made by the patentee: Since the statutory marking requirement is only an example
of the highly recommended precautious measures, we should not logically preclude
any other measure, which has or can play the same effect; or

C. The patentee from claiming
damages without patent marking: In view of the above two alternatives, we cannot
find further interests to put more efforts in discussion here although we might
be wrong under the current interpretation of the relevant laws.

Accordingly, the court decision that
because it had shipped more than a de minimis number of products after the
patent issued without the requisite marking, it failed to comply with the
mechanism set forth in 35 USC ˇ±287(a) will be welcome by us only when the
patentee cannot prove that the infringer produces the infringing product after
got known to the existence of the patent somehow.

* After knowing failure of the
compliance with the law, can the patentee cure the defect by means of simply
marking the patented product immediately?

As above described, it is believed
that we should interpret the law in the way that as soon as the patentee who
fails in the very beginning in marking the products has later marked the
products, any one who infringes the patent through in sight of the later marked
products or getting known to the existence of the patent after so proved by the
patentee should be held liable to infringements.Specifically, what is critical:

1. Is not whether the patentee
has immediately marked the product after knowing failure of the compliance with
the law: This is because the patentee can neither readily determine the
infringer must infringe the patent after got known to the marked product or the
existence of the patent nor convince or guarantee to any body on earth a
potential infringer will or does not produce the patented product simply because
of taking the marketed product as non-patented through no notice on the
products; but

2. Is whether the patentee has
proved that the infringer infringes the patent after the infringer gets known to
the marked products or the existence of the patent: The law requiring the patent
marking should not be taken as the apparent patent marking is the crucial factor
that the patent marking is the sole critical medium by which one can comply with
the law.By so taking, it is
believed that we are not trying to overrule the rules of the world or the patent
law, which are always believed to be fond of having a clear and simple rule for
judgments on matters on earth.Good
or wonderful matters will not come easily or in a simpler way.Instead, we are trying to make it clear that the law should be
interpreted in a neater way by which the human beings can lead their lives in a
more justified manner.

It is believed that we have raised a
lot of research topics, which might be headache to some authorities.Although we cannot know what we think and raise are correct or finally
wrong, we do believe that those topics might bring forth a more wonderful or
lovely world to the human being although this might come only after the world
will more or less be confused or messed for a short while.

Claims
We Have

1. Subtle
meanings behind the law are uneasy to be easily understood by the layman.Shall we strive for the case that the law article is fully understandable
by the layman?Is this possible?Is this necessary?Through
such reflection, it appears that problems we make are more than solutions we
derive.

2. The law
itself plays the role of majority violence sometimes.Since the human being selects to lead or relies on a society life, it
must lead its life following the rules of a society.This should be simple to be understood.What we would like to enquiry is if a person decides to partly lead or
partly relies on the society, can he enjoy the rights to only partly comply with
the corresponding rules set forth in the society?It is believe that the more civilized a society is, the more possibility
a part compliance with rules of a society will be allowed.Even at the present situation, it is believed that if a person has been
nearly independent of a society, he or she shall have the least obligation to be
imposed or bound by rules outlined by that society.

3. Since the patented process resulting product
or the patented process operated machine do not subject to any change so that it
is unnecessary for either of them to be marked, we cannot find any tangible
article to affix the patented notice for such patented process so that it should
be correct for us to take that no marking is required for such patented process.

4. If some one asserts that a product, which is
changed somehow by a process, which, however, is not originally devised to make
any change on the product should be marked with the patented process, we would
like not to blame or discourage his or her such assertion.

5. The word ˇ§onlyˇ¨ in the sentence that
ˇ§the patent claims are directed to only a method or processˇ¨ no more must
preclude that the operating machine or the produced product has nothing to do
with a patented process in essence.

6. It appears to be unconvincing that an
independent claim of a first subject matter will naturally become a dependent
claim of a depended claim of a second subject matter simply because the smart
human being is desirous of saving some time and keeping the claim text concise.

7. The loosened notice statement made by Chicago
Pneumatic Tool Co. v. Hughes Tool Co. that the patented item is covered by one
or more of listed patents should only be applicable when a set of products are
involved in where each product is protected by a respective patent number.

8. A statutory marking notice is preemptively
advantageous in that the patentee will have the liability to try to prove
something in an actual notice as to why there is an infringement while in a
marking notice, the potential identical or similar product producer will have
the obligation to stay away from infringement.

9. If we are compelled to answer that under the
situation that the product is not marked, which one of provisions that the
infringer is not liable for damages without an actual notice and that the
infringer is liable for damages with an actual knowledge of the patent is
better, we will choose the latter.

10. Although we cannot know what we think and
raise are correct or finally wrong, we do believe that those topics might bring
forth a more wonderful or lovely world to the human being although this might
come only after the world will more or less be confused or messed for a short
while.